The Japan Patent Office (JPO) has reversed an examiner’s refusal of International Registration (IR) No. 1050016 for the mark “ON,” filed by On Clouds GmbH, finding that the mark possesses inherent distinctiveness in relation to footwear.
[Appeal Case No. 2023-650076, decided on April 9, 2026]
IR No. 1050016 “ON”
On Clouds GmbH, a Swiss company renowned for its “On” brand and its leadership in performance sportswear and athletic shoes, filed a trademark application for the wordmark “ON” in standard characters via the Madrid Protocol on August 13, 2020. The application designated footwear in Class 25.
JPO Examiner’s Rejection
The JPO examiner initially found the mark unregistrable, stating:
“A mark comprising only two Latin letters is perceived as a type of symbol or code used to indicate product model numbers or similar identifiers. As such, it constitutes a mark consisting solely of an extremely simple and common mark, and thus falls under Article 3(1)(v) of the Japan Trademark Law.”
The examiner further noted that even after taking into account the evidence submitted by the applicant, it was insufficient to prove that the mark had acquired distinctiveness through use under Article 3(2). Consequently, the examiner issued a final refusal on May 10, 2023.
In response, On Clouds GmbH filed an appeal on September 4, 2023, arguing both the inherent and acquired distinctiveness of the mark “ON” specifically within the footwear industry.
Appeal Board Decision
The JPO Appeal Board found that the examiner erred in applying Article 3(1)(v), observing that:
“Generally, while two Latin letters may be used as symbols or codes to indicate part or model numbers, the Board could not find evidence of actual use of the letters ‘ON’ in the footwear industry for such purposes. Furthermore, ‘On AG,’ a group company of the applicant, launched the ‘On’ brand as a Swiss-born footwear label in 2010. Currently, more than 9,500 retail stores in over 66 countries carry ‘On’ products. In Japan, ‘On’ shoes have been distributed since 2015 through over 650 retailers and various e-commerce sites. The evidence shows that the brand is extensively featured in sports and fashion magazines, website articles, and newspapers, alongside robust advertising via social media, celebrity endorsements, and promotional events.”
Based on these findings—specifically that “ON” is a well-known English word with no established commercial practice as a model number in the footwear industry, and that the mark is already widely recognized by Japanese consumers—the Board concluded that relevant consumers are unlikely to perceive the mark merely as a model or part number.
As a result, the Board overturned the examiner’s rejection and granted registration for the mark “ON,” ruling that it does not fall under Article 3(1)(v).